WIPO Domain Name Decision: D2005-1144

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WPT Enterprises, Inc. v. Kaneoka Senuchi

Case No. D2005-1144

1. The Parties

The Complainant is WPT Enterprises, Inc., Los Angeles, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America.

The Respondent is Kaneoka Senuchi, Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <www-worldpokertour.com> is registered with Cydentity, Inc. d/b/a Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2005. On November 4, 2005, the Center transmitted by email to Cydentity, Inc. d/b/a Cypack.com a request for registrar verification in connection with the domain name at issue. On November 5, 2005, Cydentity, Inc. d/b/a Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint, requesting that English be the language of the administrative proceeding on November 21, 2005. The Center verified that the Complaint together with the additional submissions on the Language of Proceedings satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2005.

The Center appointed Professor Susanna H.S. Leong as the Sole Panelist in this matter on December 20, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a Delaware corporation with its principal place of business in Los Angeles, California, United States of America and it provides entertainment services in the organization and exhibition of poker events through the media of television. The Complainant has been the owner of Federal Trade Mark registrations of the mark WORLD POKER TOUR in the United States of America since November 11, 2003. The Complainant registered the domain name <worldpokertour.com> on February 26, 2002, and through its website “www.worldpokertour.com,” the Complainant promotes its goods and services under the mark WORLD POKER TOUR on the Internet.

Since the launch of the Complainant’s website “www.worldpokertour.com,” the Complainant has recorded more than 10 million page views of its website. The Complainant has expended millions of dollars in advertising and promoting the mark WORLD POKER TOUR and its goods and services. Through such marketing and promotional efforts, the Complainant’s mark has attained a certain level of popularity in the United States of America and in some other countries.

The Respondent registered the disputed domain name <www-worldpokertour.com> on December 27, 2004. The Respondent has registered and is using the disputed domain name in connection with an online traffic referral service.

Cease and desist letters requesting that the disputed domain name be transferred to the Complainant have been sent by the Complainant to the Respondent via email and mail to the email address identified in the Whois record for the domain name and to the mailing address on record respectively. However, the Complainant has not received a response from the Respondent with regard to the contents of these communications.

5. Parties’ Contentions

A. Complainant

The Complainant’s main contentions are summarized as follows:

Firstly, the Complainant contends that the disputed domain name <www-worldpokertour.com> is nearly identical and confusingly similar to its registered trademark WORLD POKER TOUR. The Complainant argues that the addition of “www-” to the Complainant’s mark WORLD POKER TOUR does not serve to materially distinguish the disputed domain name from the mark WORLD POKER TOUR because (a) the letters “www” are universally understood to stand for “World Wide Web” and they generally denote the commencement of a URL string or IP address. Thus, these letters will generally be disregarded by Internet users and the focus will be on the rest of the wordings in the IP address; (b) the addition of the generic acronym “www-” constitutes only a minor and trivial change that does not impact on the overall similarity between the disputed domain name and the Complainant’s mark; and (c) the addition of the letters “www-” to the Complainant’s registered domain name and mark is deliberately designed to obtain traffic from website users who may mis-type the Complainant’s URL’s address and is an attempt to generate traffic from the misspelling of the Complainant’s mark.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name <www-worldpokertour.com>. The reasons for the Complainant’s contentions are as follows:

(a) The Respondent is not commonly known as WORLD POKER TOUR and he is also not licensed or authorized by the Complainant to advertise or sell the Complainant’s goods or services;

(b) The Respondent was using the disputed domain name to generate “Pay Per Click” revenue from Internet users who visited the website. This constitutes commercial use and the Respondent does not qualify as a legitimate user under the Policy; and

(c) The Respondent does not make bona fide use of the disputed domain name because he is not selling goods or services, authorized or otherwise. He is simply using the disputed domain name to generate “Pay Per Click” revenue from the Internet users who visited the Respondent’s website.

Finally, the Complainant contends that the Respondent has registered and used the disputed domain name <www-worldpokertour.com> in bad faith. The Complainant asserts that the Respondent intentionally registered and used the disputed domain name to attract Internet users to the Respondent’s website so that the Respondent could generate “Pay Per Click” revenue from those users who may have landed on the Respondent’s website at “www.www-worldpokertour.com” through the intentional incorporation of the Complainant’s mark WORLD POKER TOUR in the disputed domain name. The intentional registration and use of the disputed domain name for commercial gain at the expense of loss of goodwill of the Complainant’s trademark constitutes bad faith of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Korean. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was submitted in the English language and accordingly, the Center notified the Complainant on the deficiency of the Complaint on November 10, 2005. In response to the Center’s notification, the Complainant has submitted the Argument to Request English to be the Language of Proceedings on November 21, 2005.

The Complainant submitted the following arguments on the issue of the language of the proceedings:

(a) The events that have given rise to the dispute have all been expressed in English. The disputed domain name is in English and the website is entirely in English. There is nothing that has emerged in the material generated by this dispute that is expressed in the Korean language.

(b) The Complainant argues that either the Respondent is proficient in English or he has the assistance of others who are using the English language. It is clear that the Respondent is targeting an English speaking audience and is offering services provided in English. Thus, no hardship can be done to the Respondent if the dispute should be resolved in English.

(c) The Respondent appears to have a Japanese name and an address in Japan. There would seem to be little point in conducting the proceeding in Korean.

(d) The Complainant has attempted to contact the Respondent but to date, the Respondent has not replied to the Complainant’s communications. Thus, it is impossible to obtain his agreement on the language of the proceeding.

Based on the above grounds, the Complainant asserts that it is fair and reasonable to both parties and will not prejudice either of them if the proceeding is conducted in English.

After considering the circumstances of the present case and the actions of the Complainant on the issue of the language of the proceeding, the Panel finds that the proceeding should be conducted in the English language and should proceed henceforth in the English language. The reasons for her decision are as follows:

(i) The Panel’s discretion under the UDRP

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent. The Respondent has not responded to the Complainant’s communications and thus, it was not possible for the Complainant to come to an agreement on the issue of the language of the proceeding with the Respondent.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name, the language of the Respondent’s and the Complainant’s websites, the services provided in the websites etc. On record, the Respondent is Japanese and is thus not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language. The Respondent has then been notified of the Complaint and its contents. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint lodged by the Complainant. It is also important to note that the Respondent has been party to a previous UDRP proceeding in Stanworth Development Limited v.Kaneoka Senuchi, WIPO Case No. D2005-0703, in which the facts and circumstances are similar to the present proceeding. The panel in that case also ruled that the proceeding should be conducted in English.

B. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences there from, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

Having reviewed the documents adduced by the Complainant, the Panel is satisfied that the Complainant has established that it has Federal registered rights in the trademark WORLD POKER TOUR in the United States of America and that it runs a successful and popular gaming business on television.

The disputed domain name comprises an exact reproduction of the Complainant’s trademark WORLD POKER TOUR coupled with the prefix “www-”. In assessing the degree of similarity between the Complainant’s mark and the Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the Respondent’s domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking goods and services related to poker by the Complainant. The Panel finds that the addition of the prefix “www-” does not serve to materially distinguish the Respondent’s disputed domain name from the Complainant’s trademark reproduced in its entirety in the domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain name. In accordance with the Rules paragraph 14 and based on the supported allegations of the Complaint, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(i) there is no evidence to show that the Respondent he is commonly known by the name “world poker tour”;

(ii) there is no evidence of a legitimate use of the domain name or reasons to justify the choice of the name “world poker tour” in the Respondent’s business operations;

(iii) the Respondent does not seem to be making a bona fide use of the domain name in offering goods and services for sale;

(iv) there is no evidence of a non-commercial fair use by the Respondent with regard to the disputed domain name; and

(v) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Complainant’s trademark WORLD POKER TOUR enjoys a certain degree of popularity with regard to gaming services over the Internet. Taking into account the addition of the prefix “www-” to the domain name, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. Therefore it would have been pertinent that the Respondent provides an explanation of its choice to register the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered, and subsequently used, in bad faith with an intent to ride on the popularity of the Complainant’s mark in an attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. It is also pertinent to note that the Respondent has been a party to a previous UDRP proceeding in which the facts and circumstances were similar to the present proceeding as the case was also concerned with a domain name related to gaming and card playing activities, Stanworth Development Limited v. Kaneoka Senuchi, referred to above. In that case, the same Respondent had similarly defaulted and the factual circumstances in that case were very similar to the facts of the present case. The panel in Stanworth Development Limited v. Kaneoka Senuchi also found that the respondent had registered and used the domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

The Complainant has therefore established all three elements of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <www-worldpokertour.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: January 3, 2006